Ex Parte Gödl et al

Patent Trial and Appeal Board

Mar 22, 2018

12442288 (P.T.A.B. Mar. 22, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/442,288 03/20/2009 Christiane Godl SONN:1013 9173
34725 7590 03/22/2018
CHALKER FLORES, LLP
14951 North Dallas Parkway, Suite 400
DALLAS, TX 75254
EXAMINER
OLSON, ERIC
ART UNIT PAPER NUMBER
1673
MAIL DATE DELIVERY MODE
03/22/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIANE GODL, THORNTHAN SAWANGWAN,
BERND NIDETZKY, and MARIO MULLER1
Appeal 2016-004258
Application 12/442,288
Technology Center 1600
Before JOHN G. NEW, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
of making 2-O-glyceryl-a-D-glucopyranoside (aGG) from sucrose and
glycerol. A hearing was held on March 8, 2018.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Technische Universitat
Graz. (Appeal Br. 2.)
Appeal 2016-004258
Application 12/442,288
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—13, 15—17, and 31—36 are on appeal.2 (Claims Appendix,
Appeal Br. 17—21.) Claim 1 is illustrative and reads as follows:
1. A method of making 2-O-glyceryl-a-D-glucopyranoside
(aGG) from a glucosyl donor and a glucosyl acceptor comprising
the steps:
providing a sucrose phosphorylase (EC 2.4.1.7);
incubating said sucrose phosphorylase with a mixture
comprising sucrose as a glucosyl donor and glycerol as a
glucosyl acceptor; and
isolating and/or purifying 2-O-glyceryl-a-D-
glucopyranoside from said mixture, wherein 2-O-glyceryl-a-D-
glucopyranoside is obtained in a purity of greater than 80%.
Examiner’s Rejections
1. Claims 1—3, 9—13, 15, 17, and 32—36 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kitao.3 4(Ans. 2—3.)
2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kitao and Kitao 2.4 (Id. at 3 4.)
2 Claims 18—30 are withdrawn as being drawn to non-elected subject matter.
(See Final Action dated April 15, 2015, at 2.)
3 Kitao et al., JP 05-091891, published April 16, 1993, machine translation
of record (“Kitao”).
4 Satoshi Kitao et al., Cloning of the Sucrose Phosphorylase Gene from
Leuconostoc mesenteroides and its Overexpression Using a ‘Sleeper ’
Bacteriophage Vector, J. Fermentation and Bioengineering 73, 179-84
(1992) (“Kitao 2”).
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Application 12/442,288
3. Claims 6—8 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kitao and Pimentel.5 (Id. at 4.)
4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kitao, Kitao 2, Pimentel, and Kramer.6 (Id. at 4—5.)
DISCUSSION
We adopt the Examiner’s findings as our own, including with respect
to the scope and content of, and motivation to modify or combine, the prior
art. We discern no error in the rejection of claims 1—13, 15—17, and 31—36
as obvious.
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Analysis
We limit our consideration to claim 1 because the claims subject to
this Rejection No. 1 were not argued separately.
The Examiner concludes that claim 1 would have been obvious based
on the teachings of Kitao. (Ans. 2—3.) Appellants acknowledge that Kitao
teaches the method of reacting sucrose and a sugar alcohol with sucrose
phosphorylase “where the sugar alcohols are xylitol, arabitol, adonitol,
5 M.C.B. Pimentel et al., Immobilized Sucrose Phosphorylase from
Leuconostoc mesenteroides, Appl. Biochem. Biotechnol. 27, 45—54 (1991)
(“Pimentel”).
6 Kramer et al., US 4,511,694, issued April 16, 1985 (“Kramer”).
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Application 12/442,288
glycerol and sorbitol.” (Appeal Br. 10-11.) Kitao further teaches that
compounds “such as” a-D-glucopyranosyl xylitol, a-D-glucopyranosyl
arabitol, and a-D-glucopyranosyl adonitol may be produced in the method
(i.e., using sugar alcohols xylitol, arabitol, and adonitol). (Kitao 115.)
Kitao also teaches that, in a working example, a purity of 98% a-D-
glucopyranosyl xylitol was obtained after isolation/purification. (Id. H 22—
23.)
Appellants argue that “[tjhere is nothing in Kitao that teaches that 2-
O-glyceryl-a-D-glucopyranoside (‘aGG’) can be formed. There is no
mention of 2-O-glyceryl-a-D-glucopyranoside at all. It would not be
obvious to isolate a compound that you did not know was present.”7
(Appeal Br. 11.)
We are not persuaded. Appellants arguments are based on the
contention that they discovered that the reaction of sucrose phosphorylase
with glycerol “leads to the specific addition reaction at the 2-OH to ensure
that the desired product aGG is obtained.” (Id. at 13.) However, it is well-
established that merely recognizing a result that was not known before is
insufficient to render an old process again patentable. See In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002); In re Omeprazole
Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007); see also In re Woodruff
919 F.2d 1575, 1578 (Fed. Cir. 1990) (“It is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable.”) (citing cases). Here, Kitao teaches and suggests
the claimed process steps, including the purification of the resulting product.
7 For consistency and ease of reference, we refer to the compound 2-O-
glyceryl-a-D-glucopyrano side as “aGG.”
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Application 12/442,288
Accordingly, even if Appellants were the first to recognize that the use of
glycerol in the method taught by Kitao produced aGG, that recognition
would not in itself render the method of claim 1 nonobvious over Kitao.
Appellants argue that “it would not have been obvious to use glycerol
because there is no expectation of success and no motivation to use glycerol
as suggested.” (Appeal Br. 11.) In particular, Appellants argue that a skilled
artisan “would have thought a mixture of regioisomers would have been
produced and not the specific 2-O-glyceryl composition,” and that “[i]t
would not have been obvious to use glycerol because other prior approaches
with other related enzymes have always resulted in a mixture of
regioisomers.”8 (Appeal Br. 12.) Appellants contend that “nothing in Kitao
[] teaches regioselectivity of sucrose phosphorylase,” and “the
regioselectivity of sucrose phosphorylase in the reaction of glycerol with
sucrose was not known prior to the present invention.” {Id.; see also Reply
Br. 7.)
We understand Appellants argument to be that a person of ordinary
skill in the art would not have selected glycerol in the method of Kitao
because of the expectation that a mixture of regioisomers would be
produced, including a reaction at the 1 -OH position resulting in the isomer
1-O-glyceryl-a-D-glucopyranoside “over the reaction product at the 2-OH,
8 Appellants also point to a post filing publication by the named inventors
(and Alexandra Schwartz) that, according to Appellants, “illustrates other
reactions of related enzymes, leading to the formation of 1-GG.” (Appeal
Br. 12, citing Christiane Goedl et al., A High-Yielding Biocatalytic Process
for the Production of 2-0-(a-D-glucopyranosyl)-sn-glycerol, a Natural
Osmolyte and Useful Moisturizing Ingredient, Angew. Chem. Int. Ed. 47,
10086-89 (2008).
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Application 12/442,288
which would form aGG.’’ (Appeal Br. 12.) We remain unpersuaded. Kitao
explicitly suggests using glycerol as the sugar alcohol ingredient of its
method. (Kitao 17; Ans. 6.) Furthermore, the expectation that “a mixture
of regioisomers would have been produced” suggests an expectation that at
least some aGG would have been produced, and claim 1 does not recite that
only aGG is made. Appellants also cite to Mieyal9 for the contention that “it
has been known for a long time that [sucrose phosphorylase] reacts with
ethylene glycol.” (Appeal Br. 12.) But the fact that sucrose phosphorylase
may react with ethylene glycol does not diminish Kitao’s teaching that
“sugar alcohols larger than ethylene glycol can be used in [Kitao’s]
reaction.”10 (Ans. 6.)
Moreover, even if Appellants discovered the regioselective property
of sucrose phosphorylate in the reaction of glycerol with sucrose, that
discovery would not give rise to a patentable invention. See In re Papesch,
315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing.”); see also Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 633 (Fed. Cir. 1987) (finding patent invalid even if the prior art
did not recognize that a component of its process functioned as a heat sink).
9 Mieyal, et al., Mechanism of Action of Sucrose Phosphorylase, J. Biol.
Chem. 247, 532^12 (1972).
10 We acknowledge, but are unpersuaded by, Appellants’ clarification
regarding the ethylene glycol argument; namely, that in contrast to the
known reaction of sucrose phosphorylase with ethylene glycol, “the
regioselectivity of sucrose phosphorylase in the reaction of glycerol with
sucrose has been unknown.” (Reply Br. 6—7.)
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Application 12/442,288
Appellants argue that “it was particularly surprising and unexpected
that the claimed reaction works particularly efficiently and even more with
high regioselectivity, highly unexpectedly towards the aGG product.”
(Appeal Br. 13.) We are not persuaded. Unexpected results must be shown
to be unexpected compared with the closest prior art, and the mere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention. In re Baxter Travenol Labs, 952 F.2d 388,
392 (Fed. Cir. 1991) (citing cases).
Appellants also contend that the rejection is based on “improper
hindsight.” (Appeal Br. 13—14.) We are not persuaded. Rather than using
hindsight, the Examiner points to specific disclosures in Kitao that describe
the limitations of Appellants’ claimed method. We therefore find that the
Examiner’s obviousness conclusion is based on sufficiently articulated
reasoning that overcomes any concerns about hindsight bias. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants further contend that there is nothing in Kitao that teaches
or suggests that a reaction with glycerol would form aGG “in a purity
greater than 80%.” (Appeal Br. 14.) We are not persuaded. Claim 1 recites
the step of “isolating and/or purifying” aGG, and Kitao teaches the step of
isolating and purifying a product of its method to 98% purity. (Kitao ]Hf 22—
23.)
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 1 over Kitao. Claims 2, 3, 9—13, 15, 17, and
32—36 fall with claim 1 because they were not argued separately.
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Application 12/442,288
Rejection Nos. 2—4
Appellants rely on the arguments advanced in response to Rejection
No. 1 for each of Rejection Nos. 2, 3, and 4. (Appeal Br. 15—16.) Those
arguments are unpersuasive for the reasons set forth above. Accordingly, for
the reasons of record and as set forth above, the rejections of claims 4—8, 16,
and 31 are summarily affirmed. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008).
Conclusions of Law
A preponderance of evidence of record supports the Examiner’s
rejections of claims 1—13, 15—17, and 31—36 under 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejections of all claims on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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